Ex Parte 6230930 et al

Patent Trial and Appeal Board

Mar 28, 2014

90010114 (P.T.A.B. Mar. 28, 2014)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
90/010,114 02/29/2008 6,230,930

EXAMINER
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
Jastrzab, Jeffrey
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE

03/31/2014 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CRANE MERCHANDISING SYSTEMS, INC.
____________________

Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent No. US 6,230,930 B1
Technology Center 3900
____________________

Before DANIEL S. SONG, WILLIAM V. SAINDON, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

2
STATEMENT OF THE CASE
The Patent Owner filed PATENT OWNER'S REQUEST FOR
REHEARING on September 30, 2013 (hereinafter "Rehearing Request" or
"Rhrg. Req.") under 37 C.F.R. § 41.52 seeking rehearing of our Decision
mailed July 31, 2013 (hereinafter "Decision" or "Dec."), which affirmed
various final rejections of the claims made by the Examiner. The Patent
Owner asserts that the Board overlooked various facts and requests
modification of the Decision.
We grant the Rehearing Request to the extent that we consider the
Patent Owner's arguments infra, but DENY the request to modify the
Decision.
Alleged Contradiction with Prior Board Determination Regarding
Rejections 7-15
Patent Owner alleges that "the Examiner's reasoning that is now
adopted by the Decision has already been rejected by the Patent Trial and
Appeal Board as insufficient to establish invalidity of claims containing
limitations identical to those argued in the subject appeal." Rhrg. Req. 8.
This is allegedly so because the "Decision on Appeal dated August 29, 2011
(the 'Prior Decision') reversed rejections of similar claims over Kishimoto in
combination with the above-listed references, based on the presence within
those similar claims of identical limitations to those argued in this appeal."
Rhrg. Req. 9.
While it is correct that the Prior Decision reversed the Examiner's
rejections of similar claim limitations over the combination of Kishimoto
with other references, including GB '605, Patent Owner's assertion as a
Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

3
whole mischaracterizes the record by omitting additional details regarding
the Prior Decision. Immediately after reversing a majority of the Examiner's
rejections in the Prior Decision, the Board then entered its own New
Grounds of Rejection, finding at least claim 1 obvious over GB '605. See
Prior Decision 32-40. The Examiner's rejections at issue in the present
appeal, while over many of the same references, are reformulated based
upon the New Grounds from the Prior Decision and specifically quote the
Prior Decision as to what the references were found adequately to teach. As
the Examiner points out with respect to Rejection 7, "the Examiner
incorporates the Board's position on this issue as set forth in the Appeal
Decision in Reexamination Control No. 90/010,115 on the same matter."
Ans. 19.
Each of rejections 7-15 relies upon the combination of GB '605 and
Kishimoto, which is based upon the Prior Decision's New Grounds of
Rejection. As such, while the references at issue may be the same, the
rejections in the present Decision are actually quite different from what were
previously reversed in the Prior Decision. The rejections addressed in the
present Decision are soundly based upon the Board's prior determinations of
the Prior Decision, not contradictory to them. It is these reformulated
rejections that were the subject of the present appeal and it is the
reformulated rejections that the most recent Decision affirmed.
Accordingly, we are not persuaded of any contradiction or error.
Secondary Considerations
Patent Owner alleges a failure to consider secondary considerations of
nonobviousness. Rhrg. Req. 7. Patent Owner claims that "the record
Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

4
establishes various secondary considerations indicating non-obviousness,
including copying by others, licensing, long-felt need, and failure of others,"
but provides no citation to the record supporting that these arguments were
previously set forth. Id. Not once in its Appeal Brief does Patent Owner
make any argument with regard to, or based on, secondary considerations.
Furthermore, the two declarations of record submitted by Mitchell W. Pryor
deal not with secondary considerations of nonobviousness, but with
explaining why the references allegedly fail to teach certain elements.
In order for the Board to consider secondary considerations of
nonobviousness, it is incumbent upon Patent Owner to actually argue them.
Only issues and findings of fact contested by the Appellant will be
addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010).
Having found no such arguments and having been provided with no citations
to such arguments, we are not persuaded that we failed to consider any
properly argued secondary considerations of non-obviousness as alleged.
Even in its Rehearing Request, while asserting copying by others, licensing,
long-felt need, and failure of others, these assertions are not based on
persuasive evidence of sufficient quality to establish non-obviousness. For
example, we are not directed to: evidence of actual evidence of copying by
the three largest suppliers of vending machines; details as to the licenses;
evidence of a persistent problem that was recognized in the art for which a
solution was not known; or evidence that those in the art tried to solve the
persistent problem, much less failed in their attempts.
Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

5
Obviousness
Patent Owner's first basis for requesting rehearing is merely a
rehashing of its previously submitted argument that a "non-enabling
reference is legally insufficient to support an obviousness determination."
Rhrg. Req. 3 (emphasis removed). Having dealt with this argument in the
Decision (pp. 6-9), we will not further address Appellant's continuation of
the same argument. As noted supra, the Examiner's present rejections are
firmly based upon this Board's prior determination that claim 1 is obvious
over GB '605.
It is unclear why Patent Owner continues to argue inherency and
enablement in relation to GB '605 when the elements at issue are not alleged
to be taught by GB '605 but are alleged to be obvious in light of the
teachings of GB '605. It is a tautology to assert that GB '605 fails to support
aspects of a rejection (i.e., that such elements are non-enabled or not
inherent) that the Examiner has deemed obvious. As stated in the Decision,
"the very nature of an obviousness rejection concedes that certain aspects are
absent from a reference." Decision 8-9. The only thing found to be missing
from GB '605 is running the device at a slower speed, which the Prior
Decision concluded was obvious and which we continue to uphold. Prior
Decision 36. To the extent that the Patent Owner may be arguing that such
slow running of the GB '605 would be beyond the skill of one of ordinary
skill and that the level of ordinary skill in the art was not established, we
remain unpersuaded and observe that the prior art can be considered as
representative of the level of ordinary skill in the art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) ("the absence of specific
Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

6
findings on the level of skill in the art does not give rise to reversible error
'where the prior art itself reflects an appropriate level and a need for
testimony is not shown'"); Union Carbide Corp. v. American Can Co., 724
F.2d 1567, 1573 (Fed. Cir. 1984).
Accordingly, we maintain that Patent Owner's arguments on this point
are unpersuasive.
Reasonable Expectation of Success
Patent owner argues that "[a]n obviousness determination based upon
modification of a prior art reference requires that the prior art evidence a
reasonable expectation of success in achieving the claimed invention
through the proposed modification." Rhrg. Req. 6. Patent Owner then goes
on to assert that "the record is devoid of support for any expectation of
success" in "moving the row of carriers and the elevator at sufficiently slow
speeds to avoid toppling of beverage containers." Id. We first note that
while Patent Owner nominally states the proposition that there must be a
reasonable expectation of success in relation to rejections 2-6 in the original
Appeal Brief, such an assertion is not made with respect to the obviousness
determination that the apparatus of GB '605 be run at a slower speed to
avoid toppling of containers which is the basis of rejection 1. See App. Br.
30-113.
Furthermore, with regard to rejections 2-6, Patent Owner does no
more than state the proposition and assert that such an expectation is lacking,
but does not explain why this is so. See e.g., App. Br. 114. The actual
aspect argued in this Request for Rehearing relates to slowing down the
speed of GB '605, which applies to rejection 1 for which the original briefing
Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

7
provides no such argument relating to expectation of success. Additionally,
the basis for modifying GB '605 is clearly laid out in both the Examiner's
rejections as well as the Prior Decision by the Board upon which the
rejections are based.
Hindsight
Patent Owner's final basis for requesting rehearing is to assert that the
reliance of rejections 1-6 on operation of the device in GB '605 at slower
speeds to avoid containers toppling is based upon improper hindsight. Rhrg.
Req. 6-7. Patent Owner goes on to assert that "no teaching or suggestion of
the problem is found in the prior art relied upon in the rejections." Id. at 7.
This argument is foreclosed by KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007), in which the Court rejected the rigid requirement of a
teaching or suggestion or motivation to combine known elements in order to
show obviousness. KSR Int’l Co., 550 U.S. at 415. The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418.
Furthermore, the rejection at hand as articulated in the Prior Decision
is that one of ordinary skill in the art "would have known, or been able to
readily determine a speed or resistance to speed threshold where larger items
with higher centers of gravity would tend to jar, roll, drop…" and would
then "know that it would be necessary to vend at least some of the available
products at, or below the speed threshold necessary to vend the largest
fragile item without breakage." Prior Decision 36. The rejection and its
Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

8
proposed modification of GB '605, therefore, is essentially based upon
common sense that one would not operate a machine in a manner that results
in breakage, "otherwise the resulting machine would be inoperable." Id.
“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant's disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As stated by the Board in
the Prior Decision, one of skill in the art would recognize that it would be
obvious to operate the device in GB '605 at slower speeds to avoid toppling.
We do not agree that this amounts to improper hindsight and is adequately
addressed both in the Prior Decision and the most recent Decision.

REHEARING DECISION
While we have considered the Decision in light of the Request for
Rehearing, and have elaborated on certain aspects of the Decision, we
decline to modify it in any respect.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

Appeal 2012-012308
Reexamination Control 90/009,374 and 90/010,114
Patent US 6,230,930 B1

9

DENIED
alw

FOR PATENT OWNER:
Docket Clerk
Munck Wilson Mandala, LLP
P.O. Box 800889
Dallas, TX 75380

FOR THIRD-PARTY REQUESTERS:
Paul Morico on behalf of SandenVendo America, Inc.
Baker Botts LLP
910 Louisiana St.
Houston, TX 77002

K. Lee Marshall on behalf of Royal Vendors, Inc.
Bryan Cave LLP
211 N. Broadway, Ste. 3600
St. Louis, MO 63102